UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,
v.
Civil Action No. 2:11-cv-512
AOL, INC., et al.,
Defendants.
MEMORANDUM IN SUPPORT OF MOTION IN LIMINE #1 TO PRECLUDE
PLAINTIFF FROM INTRODUCING EVIDENCE ON WILLFUL INFRINGEMENT,
PRE-SUIT KNOWLEDGE, OR COPYING
Defendants respectfully file this Memorandum in support of their Motion to preclude
Plaintiff from offering evidence of willful infringement, Defendants' pre-suit knowledge of the
Asserted Patents, or Defendants' copying of the Asserted Patents.
I.
PLAINTIFF SHOULD BE PRECLUDED FROM OFFERING EVIDENCE OF
WILLFUL INFRINGEMENT
Plaintiff's latest Initial Disclosures, dated August 8, 2012, state that "I/P Engine may also
seek increased damages based on defendants' willful infringement of the patents-in-suit." (Sohn
Dec., Ex. A.) Yet it would be wholly improper for Plaintiff to introduce evidence of willful
infringement at trial, for the simple reason that Plaintiff has never pled willful infringement.
Plaintiff's Complaint makes no willful infringement claim (see generally D.N. 1), and Plaintiff's
counsel recently admitted that "I/P Engine has not plead willfulness." (Sohn Dec., Ex. B.)
Because Plaintiff never pled willful infringement, Plaintiff may not argue willful
infringement or seek enhanced willful infringement damages at trial. See Revolution Eyewear,
Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1373 (Fed. Cir. 2009) ("The most important fact here
is that Contour failed to plead a claim for willful infringement. As a result, it was barred from
seeking enhanced damages based on willful infringement"). It follows that Plaintiff may not
introduce any evidence of willful infringement, as no willful infringement claim is properly in
this case.
In an effort to avoid motion practice over this issue, Defendants repeatedly asked Plaintiff
to confirm that it would not pursue a willfulness claim at trial. (Sohn Dec., Exs. C, D.) Plaintiff
refused to confirm this fact, instead simply stating that "as counsel has pointed out, I/P Engine
has not plead willfulness." (Id., Ex. B.) Given Plaintiff's refusal to confirm that it will not
pursue willfulness at trial (or to withdraw the statement from its Initial Disclosures that it "may"
seek increased willfulness damages), Defendants had no choice but to bring the present Motion.
II.
PLAINTIFF SHOULD BE PRECLUDED FROM OFFERING EVIDENCE THAT
DEFENDANTS HAD PRE-SUIT KNOWLEDGE OF THE ASSERTED PATENTS
For the same reason, Plaintiff should be barred from introducing any evidence that
Defendants had pre-suit knowledge of the Asserted Patents. Pre-suit knowledge of the Asserted
Patents would have no relevance to any issue other than willful infringement. Yet, as discussed
above, no willful infringement claim is properly in this case. Because Defendants' pre-suit
knowledge would have no relevance to the claims and defenses that are in this case, Plaintiff
should be barred from introducing any evidence of Defendants' pre-suit knowledge.
Furthermore, Plaintiff's supposed evidence of Defendants' pre-suit knowledge is far too
weak and attenuated for the jury to conclude that Defendants actually had pre-suit knowledge of
the Asserted Patents. For example, the only "evidence" of Google's pre-suit knowledge that
2
Plaintiff has put forth is an allegation that Google licensed a separate patent (the '361 Patent)
from third-party Overture Services, Inc., that Overture was simultaneously prosecuting another
patent application "related to the '361 patent," and that this patent application was rejected over
one of the Asserted Patents. (See D.N. 1 at ¶¶ 48-53.) In other words, Plaintiff asks the jury to
infer that Google had pre-suit knowledge of the Asserted Patents because a third-party patent
application, "related to" a patent that Google licensed, was rejected over one of the Asserted
Patents. No reasonable fact-finder could infer that Google had pre-suit knowledge of the
Asserted Patents based on these facts. Accordingly, even if Google's pre-suit knowledge was
relevant to any issues in this case (and it is not), none of Plaintiff's proffered evidence is actually
probative of Google's pre-suit knowledge. Or at minimum, any slight probative value of this
evidence would be substantially outweighed by the risk of jury confusion and sheer waste of
time, thereby rendering this evidence inadmissible under Fed. R. Evid. 403.
III.
PLAINTIFF SHOULD BE PRECLUDED FROM OFFERING EVIDENCE OR
ARGUMENT THAT DEFENDANTS COPIED THE ASSERTED PATENTS
Just as Plaintiff has provided no competent evidence that Defendants had pre-suit
knowledge of the Asserted Patents, Plaintiff has provided no evidence that Defendants copied the
Asserted Patents. Indeed, while a defendant's copying of an asserted patent is a "secondary
consideration" that may show the non-obviousness of the patent,1 Plaintiff has never listed
copying as a secondary consideration in this case. (See Sohn Dec., Ex. E) (listing various
secondary considerations, but not copying). Thus, Plaintiff has never alleged copying in the one
legal area (obviousness) for which it could theoretically be relevant.
1
See, e.g., DePuy Spine, Inc. v. Medtronic Somafor Danek, Inc., 567 F.3d 1314, 1328
(Fed. Cir. 2009).
3
Accordingly, any evidence or argument about copying that Plaintiff might offer at the
present juncture would be irrelevant and highly prejudicial under Rule 403. For example,
Plaintiff cannot support its infringement case by alleging that Defendants copied the Asserted
Patents. See DePuy, 567 F.3d at 1336 ("evidence of copying is 'of no import on the question of
whether the claims of an issued patent are infringed,' either literally or by equivalents.") To the
contrary, a copying allegation could only serve to prejudice the jury by suggesting that the
accused systems lack innovation and are mere replicas of the Asserted Patents.
Because any evidence or argument about copying would be irrelevant and prejudicial,
Plaintiff should be precluded from offering such evidence at trial or arguing to the jury that
Defendants copied the Asserted Patents.
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DATED: September 21, 2012
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624.3000
Facsimile: (757) 624.3169
senoona@kaufcan.com
David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: (415) 875-6600
Facsimile: (415) 875-6700
davidbilsker@quinnemanuel.com
davidperlson@quinnemanuel.com
Counsel for Google Inc., Target Corporation,
IAC Search & Media, Inc., and Gannett Co., Inc.
By: /s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624-3000
Facsimile: (757) 624-3169
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: (571) 203-2700
Facsimile: (202) 408-4400
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Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: (404) 653-6400
Facsimile: (415) 653-6444
Counsel for Defendant AOL Inc.
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CERTIFICATE OF SERVICE
I hereby certify that on September 21, 2012, I will electronically file the foregoing with
the Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF)
to the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: (202) 420-2200
Facsimile: (202) 420-2201
sherwoodj@dicksteinshapiro.com
brothersk@dicksteinshapiro.com
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: (757) 623-3000
Facsimile: (757) 623-5735
dschultz@cwm-law.cm
wrsnow@cwm-law.com
sstancliff@cwm-law.com
Counsel for Plaintiff, I/P Engine, Inc.
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624.3000
Facsimile: (757) 624.3169
senoona@kaufcan.com
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